Raising the Threshold for Trademark Infringement to Protect Free Expression

64 Pages Posted: 3 Apr 2023 Last revised: 30 May 2023

See all articles by Christine Haight Farley

Christine Haight Farley

American University - Washington College of Law

Lisa P. Ramsey

University of San Diego School of Law

Date Written: March 22, 2023


The First Amendment right to free speech limits the scope of rights in trademark law. Congress and the courts have devised various defenses and common law doctrines to ensure that protected speech is exempted from trademark infringement liability. These defensive trademark doctrines, however, are narrow and often vary by jurisdiction. One current example is the speech-protective test first articulated by the Second Circuit in Rogers v. Grimaldi, and later developed by the Ninth Circuit, which applies when another’s mark is used within an expressive work. The Rogers test prevents a finding of infringement if this use is artistically relevant to the underlying work and does not explicitly mislead consumers as to the source or content of the work. This categorical rule has definite advantages over the multi-factor likelihood of confusion test in trademark disputes involving expressive works, but—like other speech-protective doctrines—this test has limitations and shortcomings.

This Article proposes an alternative test for protecting First Amendment interests in trademark law that better balances the public interest in avoiding consumer confusion against the public interest in free expression. This proposed broad trademark fair use test would apply to any informational or expressive use of words, names, or symbols claimed by another as a mark in connection with any goods or services. If this threshold requirement is satisfied, this use is not infringing unless the accused infringer’s expression is (1) a false statement about its products (including false claims of sponsorship, endorsement, or approval) or (2) is likely to mislead a reasonable person about the source of the goods, services, or message. This more holistic approach to protecting speech interests in the trademark enforcement context should increase clarity and predictability in trademark law, and will enable courts to dispose of speech-harmful claims as a matter of law early in a lawsuit.

Keywords: trademark, First Amendment, expressive works, artistic works, parody, free speech, likelihood of confusion, Rogers v. Grimaldi, Jack Daniel's, Bad Spaniels, Lanham Act, Supreme Court, fair use

JEL Classification: K39, K19

Suggested Citation

Farley, Christine Haight and Ramsey, Lisa P., Raising the Threshold for Trademark Infringement to Protect Free Expression (March 22, 2023). 73 American University Law Review 101 (2023), San Diego Legal Studies Paper No. 23-017, Available at SSRN: https://ssrn.com/abstract=4396913 or http://dx.doi.org/10.2139/ssrn.4396913

Christine Haight Farley (Contact Author)

American University - Washington College of Law ( email )

4300 Nebraska Avenue, NW
Washington, DC 20016
United States
202-274-4171 (Phone)

HOME PAGE: http://wcl.american.edu/faculty/farley

Lisa P. Ramsey

University of San Diego School of Law ( email )

5998 Alcala Park
San Diego, CA 92110-2492
United States

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